SHIFTING PARADIGM OF COMPUTER PROGRAM PATENTING: CRITICAL EVALUATION

COMPUTER PROGRAM PATENTING
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About the Author:

Ambika Saksena is an Advocate. She had pursued her law studies from Rajiv Gandhi National University of law, Patiala.

ABSTRACT

In today’s advanced world, when most developments are in light of computer programs, it is unwelcoming to contend that all such innovations would not be patentable. Development in the field of artificial knowledge, blockchain innovations and other digital items would be in view of computer programs, and it would not become nonpatentable developments – merely for that aim. It is uncommon to see an item that did not depend on a software program. Regardless of whether they are vehicles and other cars, microwaves, clothes washers, coolers, they all have a type of software programs in-worked in them.

Software patenting is always been a controversial concept in the Indian Patent Law. It has faced lots of changes over the years as more and more advanced devices are being used by corporations and by the common people for their day-to-day activities in life. But the current laws did not give justice to these computer programs because unless and until that programme is being used in the hardware it can be patented if not it is liable to receive copyright protection only. Being in the era of digitalization or technological advancement it becomes important to give attention to software patents.

Keywords: Patent, Software Patents, Computer Related Inventions, Patent Act 1970

PATENT IN INDIA

“Patent is an award for an inventor and a reward for the investor.[1]” The award of a patent for a creation pulls in funding because the commercial utilization of the development is conceivable to its fullest degree during the term of the patent. Another significant favourable position of the patent framework is that it advances the ‘create around’ idea. The patent is allowed just when the development and its functioning or use and the procedure by which it is to be performed are completely revealed.

Patent stand in for quid pro quo. Quid Pro Quo is a Latin phrase that means “a favour for a favour”. Here Quid is a monopoly and Quo is the invention that was not created earlier for the public as the person who invents handover his invention for the social use and takes absolute rights over it for a particular period, after which the invention falls into Public Domain.

Patens in India are governed under The Patents Act 1970 which defines patents as a patent for an invention granted under the said Act under section 2(1)(m).

India being a Signatory to TRIPS in 1995 decided to provide a Product Patent for Medicines and drugs which is considered to be undesirable in the 1970 Act by bringing an amendment in the year 2005 which deleted section 5 which states that for food, pharmaceuticals, medicines etc only process patent will be granted.

Hence under the Patents Act, 1970 patent can be provided for a product i.e. article, substance, item produced and for the process i.e. the procedure, method, system by which such product is produced.

The term invention is defined under section 2(1)(j) of the 1970 Act it implies a novel product or process including inventive step and fit for commercialization.

Following are the essentials for the grant of Patent:

  1. Inventive Step– Section 2(1) (a) define it “as a part of a creation which is a technical advance regarding prior knowledge or economic significance or both so that the person who is already skilled in that art cannot anticipate it.”
  2. Novelty/ Uniqueness– An invention should be new regarding already existing creation. Thus, it is not anticipated by a person skilled in that art or used by any other country in the world unless and until it falls in Public Domain.
  3. Industrial Application– the creation must be efficient to be used or made for the industry as per section 2(ac) of the Patent Act 1970.

Software Patents

Software is defined as a set of directions to a computer that achieves a specific outcome. Since the source code is communicated in written structure, programming may coherently be characterized as being liable to copyright insurance as a literary work. This was the early approach towards software protection in most existing enactment.

These guidelines are at the start communicated as Algorithms – these are strains of instructions made in such wordings that are understandable to the computer systems. However, programming doesn’t just source code; to have the option to work in a computer, programming must be converted into object code by a cycle of selection.

But Software isn’t always simply written articulation: its strains of code have a characteristic this is freed from the linguistic improvement of the strains of code.

Copyright isn’t, as a rule, worried about functional effects, since patents secure the utilitarian parts of works. The dispute or warfare of thought or idea or expression is not present in the law relating to innovations: if an idea satisfies the prerequisites for patentability – patentable substance, uniqueness and innovative step – it will be granted patent security.

The current growth of Artificial intelligence and e-trade has brought about many patents being carried out for and granted for commercial enterprise techniques carried out in software.[2]

Software Patents in TRIPS

With respect to computer programs, Article 27 and Article 10 are the prime provisions of the TRIPS Agreement. Clause (1) of Article 10 states that:

“Computer programs, whether in source or object code, shall be protected as literary works under the Berne Convention (1971)”

And Article 27 provides that:

“Patent shall be available for any invention… in all fields of technology provided that they are… capable of industrial application.”

After reading both Articles it is clear that there is an ambiguity and internal contradiction between the articles regarding software patenting. But it can also be interpreted that under Article 10 minimum protection is provided and under Article 27 it is up to the member state to decide what subject matter are patentable.

Hence TRIPS do not able to solve the questions relating to software patentability’s.

SOFTWARE PATENTING IN INDIA

Initially in India, patent protection of software/computer programs was not allowed under the Patent Act 1970 and only the copyright protection is accessible for computer programs under section 2(O) of the Copyright Act 1957as it is considered to be Literary Work, therefore computer programmes alone are not patentable in India and the only provision under a Patent Act which deals with a computer programme is section 3(k) as it deals with non-patentable invention and states that:

a mathematical or business method or a computer program per se or algorithms”.

On January 1 2005 a Patent amendment Ordinance 2004 received the assent of the President of India was brought into force which amended the 1970 Act and added in section 3(ka) to permit the patenting of “embedded software” and it reads as follows:

“a computer programme per se is not patentable other than its technical application to industry or a combination with hardware”.

As a result of this Ordinance software which can possess a technical capability to the business or a computer programme joined with hardware would be fit of being allowed a patent.

A cautious translation and investigation of the provision clarify that it is computer programs per se are not permitted as they are part of the copyright in India.

While enacting this Ordinance Mr Kamal Nath released the official statement stating that:

“In IT, the trend is to have software in combination with or embedded in hardware – such as in computers or cell phones or a variety of other gadgets. Software as such has no patent protection (the protection available is by way of copyright), but the changing technological environment has made it necessary to provide for patents when software has technical applications in industry in combination with hardware. This has been a demand of NASSCOM.”  …. (and later) …  “We have introduced a provision for patenting of software that is embedded in hardware”

However, the Ordinance got rejected by the Parliament of India on the ground that it will create the monopoly of Multinationals Companies in India leaving section 3(k) as it is before the amendment.

 In the year 2008, the Patent Office published Draft Manual of Patent Practise and Procedure that seeks to make technical applications of software patentable but it was withdrawn from circulation as the Act of 1970 clearly stated that computer software per se is not patentable.[3]

 As per the report published by the Joint Committee[4], the intention of the legislators for using the term ‘per se’ in section 3 (k) of the Act of 1970 is that:

“In the new proposed clause (k) the words “per se” have been inserted. This change has been proposed because sometimes the computer programme may include certain other things, ancillary thereto or developed thereon. The intention here is not to reject them for grant of the patent if they are inventions. However, the computer programmes `as such are not intended to be granted patent. The amendment has been proposed to clarify the purpose.”[5]

Hence it is clear after reading that the intention behind the inclusion of the words ‘per se’ in section 3 (k) of the Act 1970 is to secure those original creations which are created, given software programs are not denied patents.

In India, the CRI has similar legal standing as it has in the European Patent Convention as Article 52 of Convention excludes “programmes for computer” from patentability to the extent that a patent application relates to a computer program “as such”. This has been interpreted to mean that any invention which makes a non-obvious “technical contribution” or solves a “technical problem” in a non-obvious way is patentable even if that “technical problem” is solved by running a computer program.[6]

Currently following are the guidelines in respect of CRIs issued by the Patent Office:

  1. Draft Guidelines for Examination of Computer Related Inventions, 2013-These guidelines explain the words ‘per se’ to signify ‘without help from anyone else’, expressing that they mean to demonstrate towards something ‘separately on its own’ rather than being ‘in relation to’ something different. This separated, the rules depicted a few ambiguities and overextending unwinding for computer program patenting.
  2. Guidelines for Examination of Computer Related Inventions, 2016 – These Guidelines introducedthree-venture test which as follows:
  3. Properly interpret the claim and find out the real contribution.
  4. If the commitment lies just in mathematical technique, business strategy or algorithm, deny the affirmation. 
  5. If the commitment lies in the field of software programs, check whether it is claimed in coexistence with novel equipment, what’s more, continue with further steps to decide patentability regarding the creation. The software program in itself is never patentable. On the off chance that the commitment lies exclusively in the computer program, deny the case. On the off chance that the commitment lies in both the software program just as equipment in which it is embedded, continue with further steps of patentability.

Rather than repairing the problem of immoderate relaxation, these policies broadened this problem and set forth that whether an item will receive patent coverage will be inspected as usual of its presence as a mixture with a unique gadget for patentability and without going with an explanation of the expression novel equipment, made genuine challenges for the execution of the test.

  • Revised Guidelines for Examination of Computer Related Inventions, 2017- The said rules revolves around the subject matter of creation instead of its claimed structure and has deleted the Three Steps Test.

Guidelines also contain a regulation that

“the rejections may not have any significant bearing to creations that incorporate mathematical formulae and bringing about frameworks for encoding, decreasing commotion in interchanges/electrical/electronic frameworks or encoding/unscrambling electronic interchanges.”

It can be said that one can expects that creations coordinated to these technical areas would not be exposed to reject under grounds of patent ineligible subject matter. Yet, the gap right here is that those policies do not display in perception concerning what is genuinely covered in Section 3(k).

In the Guidelines of 2013[7] explain ‘Technical Effect and Advancement’  as follows:

 “Technical Effect – is a solution to a technical problem, which the invention taken as a whole, tends to overcome. A few general examples of technical effect are as follows:

· Higher speed

· Reduced hard-disk access time

· More economical use of memory

· More efficient database search strategy

· More effective data compression techniques

 · Improved use interface

· Better control of robotic arm

 · Improved reception/transmission of a radio signal”

“Technical Advancement– “It is defined for these guidelines as a contribution to the state of art in any field of technology. It is important to divide between software, which has a technical outcome, and that which doesn’t, while assessing the technical advance of the invention. Technical advancement comes with technical effects, but all technical effects may or may not result in technological advancement.”

Patent offices all over the world have attempted patent programs on this area of innovation, at the aid of ‘technical effect‟ and „technical contribution‟. On the occasion that the invention or product indicates a „technical effect‟ or a “technical contribution‟ it’s miles patentable even though it could be primarily based totally on an Algorithms.

Judicial Precedents in India on Computer Programme Patenting

  • [8] In this case, Apex Court of Delhi held that “a simple reference to the operation of a ‘procedure’, a method’ or an ‘algorithm’ in a device or a machine that additionally comprises of webwork or is embedded in hardware, in order to  achieve a technical impact, doesn’t place the stated innovation in the class of ‘computer Program per se’”. The Court placed reliance on the  VICOM decision in which the Technical Board of Appeal of European Patent Office concluded that:

 “Even if the idea underlying an invention may be considered to reside in a mathematical method if that method is used in a technical process and a claim is aimed to that same process in which the method is used, it cannot be considered that the invention consists in a mathematical method as such and that what matters to the state of the art, is the technical contribution of the invention as defined in the claims considered as a whole.”[9]

Hence, eliminating the irregularity and explaining the actual interpretation of Section 3(k), the Judicial Body held “that a software program that makes a noteworthy contribution to a technical craftsmanship is a patentable development and isn’t struck by the Section 3(k) of the Patents Act, 1970.”

  • [10] The decision, in this case, is similar in direction to the decision in Ericsson v. Intex was made and has come as a comfort for incalculable software improvement applicants. Featuring those most extreme creations around us including vehicles, fridges, stoves, clothes washers and so on depending on computer programs and subsequently, the contention that such items will be non-patentable is un-progressive and redundant. The Court concluded by saying “if a creation reveals ‘technical effect’ or ‘technical contribution’, the restriction under Section 3(k) would not apply, and it would be patent eligible subject matter, however, it will have to satisfy the essentials of patentability, namely novelty, inventive step and commercialization.”

SOFTWARE PATENTING IN US AND EUROPE

 U.S.

To begin with US treated Computer licensing dubiously and on a few events held that software is basically a numerical formula and consequently not patentable under US Legislations. However, in the case Diamond v. Diehr [11]patent was permitted “to a system of controlling a rubber embellishment press through a product utilizing an unidentified numerical condition, for the process show changes in the material state of things. The patent was allowed on the grounds that it in excess of an abstract idea and is liable for carrying real change to the status quo.”

After this Judgement of the US Court CCPA (Court of Custom and Patent Appeals ) introduced Freeman Walter Abelete Test:

  1. The claim is to be examined to decide if a mathematical calculation is straightforwardly or by implication presented,
  2. In the event that numerical calculations is discovered, the case all in all is additionally examined to decide if the Algorithm is applied in any way to actual components or physical steps.

If the result of both the test is positive then the subject is patentable. However, there is no consistency in the execution of these tests. Further in State Street Bank v. Signature Financial Group [12]in which it is held that “Computer operated/ Digital Business strategies are patentable if it produces ” a valuable, concrete and physical outcome” and the Freeman Walter Abelete Test was also rejected by the Federal Circuit which stated that:

“After Diehr and Chakrabarty the said test has minuscule if any, usefulness to decide the existence of statutory subject matter”

Examination Guidelinesfor computer-related inventionsthe computer-related process to be a subject of the patent must follow a material change outside the software for which practical application in the technological arts is either mentioned in the description or would be obvious to the Person skilled in that art and be limited to the practical application within the technological arts.[13]

As per the Guideline, there are 2 types of processes that are patentable, one where the process performs its operation independent physical act outside the software after the completion of the functions of internal computer programme and secondly where the process performs its operation independent physical act outside the software before the completion of the functions of an internal computer programme. And the matter which is not eligible for patent consists of a mathematical Algorithm alone without any industrial application and simply use the abstract idea without any industrial application.

Alice Corporation Pty. Ltd. V. Cls Bank International et all [14]In this case Supreme Court of US segmented a two-step process to determine whether a computer-related creation is eligible to be patented. The first is to check whether the invention for which patent is claimed involves an abstract idea if yes then to check whether elements independently or jointly change the software into an invention that can be patented. Further Court held that “the mere recitation of the generic computer cannot transform the patent ineligible abstract idea into a patent-eligible invention.”

This shows that the US has generally loosened up its laws for software patentability and is not any more adhering to the customary physical methodology.

Europe

In Europe, there is obvious favouritism towards copyright security through the Directive on the legal protection of Software Programmes. Further Article 52 (2)(c) of the European Patent Convention (EPC) explicitly states that Computer programs “per se” ought not to be viewed as a patentable topic.Thus, source code, or the written and literary component of a Computer programme, can’t be protected, Software that creates a type of impact in the same way that some other invention does will get assurance.

European Patent Office Board of Appeal in the case of VICOM 1987, states that in case a software process has merely an abstract idea and mathematical it will have an unpatentable effect and in cases where software process has a technical contribution or functional effect and should be the subject matter of the patent.

In Koch & Stezel[15].  case the Board of Appeal held that “a creation must be evaluated overall. if it utilizes both technical and non-specialized methods, the utilization of non-technical methods doesn’t degrade the technical character of the general educating.”

European Commission proposes the CII Directive, which was intended to redesign European patent practices by making the phrasing of ‘technical impact’ more exact. The said Directive contained its meaning of what establishes a technical contribution meant “a contribution to the state of the art in a technical field which is not obvious to a person skilled in the art.”

Article 5 clearly states:

 “Member States shall ensure that a computer-implemented invention may be claimed as a product that is as the programmed computer, a programmed computer network or other programmed apparatus, or as a process carried out by such a computer, computer network or apparatus through the execution of software.”

The issue with the said Article was that it made the way for the patentability of computer programme “per se”, prompting remarks that this made the way for American-style limitless patentability of software.

However, the European Parliament struck down the Directives.

Hence ambiguities still exist in relation to the meaning of technical effect which needs to be clarified.

CONCLUSION

In a worldwide economy with the generally free rush of investments and trade, among developed and developing countries, all countries profit by the strict requirement of IPR. A solid IP rights system urges creative organizations to move innovations and business techniques to their subsidiaries in developing nations, through huge FDI; and those speculations encourages the modernization cycle in those nations, creating new gains in productivity, development, and business.

Because of the shortcomings of the global mechanism to coordinate the law of Computer Programme Patenting, it has been generally evolved by the domestic courts and governing bodies which have been significantly influenced by their interests.

Computer Programme patents licenses in the US have declined despite confusing definitions for unique ideas and nonexclusive computers. And by the expulsion of the three-stage test of the importance of novel equipment in India, there is as yet a need to eliminate the uncertainty encompassing the term ‘algorithm’ in the 2017 Guidelines.

USPTO and EPO have fluctuating guidelines for licensing of a computer programme. The US has a considerably more liberal methodology and states that developments according to programming are patentable in the event that it is equipped for changing the input to some valuable output. The EPC, then again, awards licenses to programming yet has a substantially more tough methodology. Programming will be conceded licenses by the EPO on the off chance that it is non obvious to a person skilled in prior art and furthermore has a ‘Technical impact’.

Software engineer puts its time and money in building up a software yet the Indian laws are lacking in ensuring protection to the work produced by the Software designer. Patent insurance is a demonstrated method for supporting development, improving expectations for everyday comforts and boosting business. As the Indian economy turns out to be perpetually digitized, with software progressively framing the foundation of advancement and business competition India can’t stand to prohibit software from patentability.

While the underlying 2013 Draft Guidelines characterizes “technical effect”, the said definition isn’t to be found in the later rules. The meaning of technical effect‟ is not, at this point in question inferable from the development of legal precedents and patent office exercises universally and in India.

The cases that have been concluded subsequently to the 2017 Guidelines will probably have an interpreting impact in providing instances of the patent eligible topics. The decision in the Ferid Allani v. Union of India & Ors., 2019 SCC DEL 11867 is of eminent significance and shall aid companies seeking to file creations related to computer programs in India.

There has been a recognizable decrease in the rigidity of law concerning protecting abstract thoughts, which has brought about cultivating better advancement in the field of software improvement. A reference might be made to the overarching laws in these foreign purviews to make a strong programming patentability law for the Indian situation, to wipe out possible ambiguities and different difficulties that the said jurisdictions needed to confront and that they have survived. This will help the parliament in creation a profoundly informed choice and will keep away from the potential loopholes’ clauses in Indian law. All things considered, the best method to support any economy is to energize advancements in a directed way, making a mutually advantageous arrangement for all.

In 2019, a Draft Manual of Patent Office Practice and Procedure was released which doesn’t appear to considerably change a lot, however, eliminates the language regarding what types of CRIs would not be patentable and added a line in the same section stating “For this clause, refer the Revised Guidelines for Examination of Computer-related Inventions (CRIs), 2017.” – consequently in actuality not generally explaining the extent of Section 3(k).

Till date, the reason for giving the patents to Computer programming in India isn’t the computer program per se however the technical outcome that the process can get.

REFRENCES

Reports:

  • Report of the Joint Committee on the Patents (Second Amendment) Bill, 19991

Books:

  • Dr. Ashok K. Jain, Intellectual Property Laws-II, p.220,2012
  • R. Anita Rao & V. Bhanoji Rao, Intellectual Property Rights- A Primer, p.81, 2008

Articles, Journals and Reports:


[1] R. Anita Rao & v. Bhanoji Rao, Intellectual Property Rights- A Primer, p.81, 2008.

[2] Dr. Ashok K. Jain, Intellectual Property Laws-II, p.220,2012.

[3] Ravindra Chingale & Srikrishna Deva Rao, Software Patent in India: A Comparative Judicial and Empirical Overview, Journal of Intellectual Property rights, Vol 20, p. 213, July 2015.

[4] Report of the Joint Committee on the Patents (Second Amendment) Bill, 1999 (19th December, 2001)

[5] Page no. 2, Report of the Joint Committee on the Patents (Second Amendment) Bill, 1999 (19th December, 2001)

[6] Supra Note 2.

[7] Draft Guidelines for Examination of Computer Related Inventions, 2013

[8] 2015 SCC DEL 8229

[9] VICOM Systems Inc. (Case No. T 208/84) 1986, at https://www.livelaw.in/columns/software-patenting-in-india-159179, 04/12/2020

[10] 2019 SCC DEL 11867

[11] 450 US 175 (1981)

[12] 149 F.3d 1368 (Fed. Cir. 1998)

[13] Abhishek Kumar Singh & Suryakant Kashyap, Software Patentability: A Comparative Analysis, at http://www.manupatra.com/roundup/323/Articles/Software%20Patentability.pdf , 05/12/2020

[14] 573 (US) 2014

[15] T 0026/86- 3.4.1

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